It is not sufficient to compare a trademark to another trademark that is already registered and whose proprietor is opposing the registration of the former trademark in order to determine whether it is likely to deceive or cause confusion. It’s crucial to determine the distinguishing or essential feature of the already registered trademark, as well as the main feature or main idea underlying that trademark; if the alleged trademark contains the same distinguishing or essential feature or conveys the same idea, it’s a clear case of intent to deceive or cause public confusion.
Rule of Anti-Dissection in Trademark Law
Authors : Nilanshu Shekhar, Akanksha Anand, Rishabh Manocha
According to the Anti-Dissection rule, a trademark law theory, any comparison between two potentially incompatible marks must be evaluated holistically, or according to how consumers in the marketplace perceive the marks, rather than by examining each mark separately. All of the criteria should be used to evaluate the marks. However, this does not exclude an examination of the mark’s dominant and subordinate qualities in order to ascertain which elements have the greatest impact on customers. This principle is founded on the idea that the combined effect of a composite mark will be more impressive to a typical prospective consumer than the sum of its parts.
Background
The rule was first propounded in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals, 1965 AIR 980.[1] The court held that when the defendant’s use of the mark that is claimed to infringe the plaintiff’s mark is shown to be “in the course of trade,” the question of whether there has been an infringement is resolved by comparing the two marks. It should, however, be borne in mind that the object of the inquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
The Supreme Court observed the differences between a passing-off action and trademark infringement. The Court pointed out that while passing off action is a common law remedy, infringement has been a statutory remedy. By virtue of the proviso of Section 6(3) of the Trademark Act, 1999, a mark that is not “adapted to distinguish” by the application of the requirements provided out in Section 6(1) of the Act may nonetheless qualify for registration by proof of acquired distinctiveness. The Apex Court after taking into consideration the said provision held that the term “distinctiveness” could not mean “suited to distinguish,” because if it did, the proviso would contribute nothing to the provision and would make no difference in the law between new and old marks that had been in use continuously before the designated date. It was therefore impossible to accept a construction that would put old and new marks on the same footing and subject them to the same registration criteria.
In the landmark judgment of Amritdhara Pharmacy v. Staya Deo Gupta, 1963 AIR 449,[2] the Supreme Court after ruling that “the use of the word “dhara,” which literally means “current or stream,” “was not by itself decisive of the matter.” The Supreme Court went on to rule that “the overall structural and phonetic similarity” between the names “Amritdhara” and “Lakshmandhara,” which were used in connection with identical products, was likely to cause confusion. From the customer’s perspective, the Supreme Court reaffirmed the anti-dissection principle, stating that “an unwary purchaser of average intelligence and imperfect recollection would not, as the High Court assumed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as “current of nectar” or “Current of Laxman.””
The courts, in this case set down rules/guidelines, the essence of which echoes till today. The courts laid down the test for determining if the two marks were similar.
Two Important Tests:
- Reasonable Man’s Test: The differentiation of the two marks must be done from the point of view of a man with average intelligence and imperfect recollection.
- Overall Impression Test: According to this test, we must see the overall impression of the two marks. This includes the overall phonetic and visual similarity of the two marks.
The court, in this case, remarked that a man would have to be “unusually stupid” or must be a fool or an idiot to be deceived between the two marks. The overall impression of the two marks showed obvious differences.
In a very recent case of PhonePe Pvt. Ltd. v. Ezy Services & Anr., IA 8084/2019 in CS(COMM) 292/2019,[3]the Delhi High Court applied the rule of anti-dissection. It stated that the plaintiff has not registered ‘PhonePe’ as two different marks rather it must be seen as a whole. The marks ‘PhonePe’ and ‘BharatPe’ cannot be dissected for suit for infringement as the word ‘Pe’ is merely misspelling of the word ‘Pay’ and the plaintiff cannot claim exclusivity over it.
Dominant Rule: The Confusion With Anti-Dissection Rule
Having noted the “anti-dissection rule” and its facets, it is important to consider that, in applying this rule, the Court was also required to consider the “dominant mark” test, under which, if any part of the plaintiff’s mark is found to be dominant, the Court must consider whether the defendant has infringed on that dominant part of the plaintiff’s mark. The Court did not break the anti-dissection rule by identifying a dominating part of the plaintiff’s mark and determining whether it was infringed by the dominant part of the defendant’s mark, according to the court. This principle was observed in the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., FAO(OS) 389/2014[4] as follows:
“While a mark must be examined in its totality, it is allowed to assign greater or lesser value or “dominance” to a particular piece or element of a mark in the case of composite marks. As a result, a ‘dominant mark’ is a component of a composite mark that has a higher prominence than the other constituent pieces.”
The Court further observed that even though it has also been established that, while a trademark should be examined in its totality, the consideration of a trademark as a whole does not permit infringement where only a portion of the trademark is appropriated. In the case of composite marks, it is not incorrect to identify aspects or features of the marks that are essential for the purposes of analysis.
Conclusion
Exclusivity can only be asserted, and infringement/passing off can only be alleged, if the plaintiff’s complete mark is involved, not just a portion of it. The registration of the entire mark does not grant the proprietor of the mark exclusive rights to any component of the mark. It is possible for the plaintiff to claim infringement based on the defendant’s copying of a part of the mark, as long as the part copied is the dominant component or an essential characteristic of the plaintiff’s trademark. However, no exclusivity can be claimed, over a descriptive mark, or a descriptive part of the mark, even by misspelling it.
Trademark Registration Process in India
Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand Proceeding Procedure, And The Time Frame After filing the application, the registry issues an official receipt with the filing date and application…
Trademark Hearing: Key Steps to Strengthen Your Case
Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand We have often been at the receiving end in defending IP practices in India by several clients and foreign associates. Most notable…
Civil and Criminal Remedies – Trademark Infringement & Passing Off
Authors : Nilanshu Shekhar, Atul Dhyani Section 29 and 30 of the Trade Marks Act, 1999 deals with the infringement actions as a remedy against unlawful and unauthorized use of…
Procedure to Register a Trademark in India
Authors : Nilanshu Shekhar, Akanksha Anand, Rishabh Manocha The process for registering a trademark in India is as follows: 1. Search for conflicting marks: The first step in the trademark…
Rule of Anti-Dissection in Trademark Law
Authors : Nilanshu Shekhar, Rishabh Manocha and Akanksha Anand
According to the Anti-Dissection rule, a trademark law theory, any comparison between two potentially incompatible marks must be evaluated holistically, or according to how consumers in the marketplace perceive the marks, rather than by examining each mark separately. All of the criteria should be used to evaluate the marks. However, this does not exclude an examination of the mark’s dominant and subordinate qualities in order to ascertain which elements have the greatest impact on customers. This principle is founded on the idea that the combined effect of a composite mark will be more impressive to a typical prospective consumer than the sum of its parts.
Background
The rule was first propounded in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals, 1965 AIR 980.[1] The court held that when the defendant’s use of the mark that is claimed to infringe the plaintiff’s mark is shown to be “in the course of trade,” the question of whether there has been an infringement is resolved by comparing the two marks. It should, however, be borne in mind that the object of the inquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
The Supreme Court observed the differences between a passing-off action and trademark infringement. The Court pointed out that while passing off action is a common law remedy, infringement has been a statutory remedy. By virtue of the proviso of Section 6(3) of the Trademark Act, 1999, a mark that is not “adapted to distinguish” by the application of the requirements provided out in Section 6(1) of the Act may nonetheless qualify for registration by proof of acquired distinctiveness. The Apex Court after taking into consideration the said provision held that the term “distinctiveness” could not mean “suited to distinguish,” because if it did, the proviso would contribute nothing to the provision and would make no difference in the law between new and old marks that had been in use continuously before the designated date. It was therefore impossible to accept a construction that would put old and new marks on the same footing and subject them to the same registration criteria.
In the landmark judgment of Amritdhara Pharmacy v. Staya Deo Gupta, 1963 AIR 449,[2] the Supreme Court after ruling that “the use of the word “dhara,” which literally means “current or stream,” “was not by itself decisive of the matter.” The Supreme Court went on to rule that “the overall structural and phonetic similarity” between the names “Amritdhara” and “Lakshmandhara,” which were used in connection with identical products, was likely to cause confusion. From the customer’s perspective, the Supreme Court reaffirmed the anti-dissection principle, stating that “an unwary purchaser of average intelligence and imperfect recollection would not, as the High Court assumed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as “current of nectar” or “Current of Laxman.””
The courts, in this case set down rules/guidelines, the essence of which echoes till today. The courts laid down the test for determining if the two marks were similar.
Two Important Tests:
- Reasonable Man’s Test: The differentiation of the two marks must be done from the point of view of a man with average intelligence and imperfect recollection.
- Overall Impression Test: According to this test, we must see the overall impression of the two marks. This includes the overall phonetic and visual similarity of the two marks.
The court, in this case, remarked that a man would have to be “unusually stupid” or must be a fool or an idiot to be deceived between the two marks. The overall impression of the two marks showed obvious differences.
In a very recent case of PhonePe Pvt. Ltd. v. Ezy Services & Anr., IA 8084/2019 in CS(COMM) 292/2019,[3]the Delhi High Court applied the rule of anti-dissection. It stated that the plaintiff has not registered ‘PhonePe’ as two different marks rather it must be seen as a whole. The marks ‘PhonePe’ and ‘BharatPe’ cannot be dissected for suit for infringement as the word ‘Pe’ is merely misspelling of the word ‘Pay’ and the plaintiff cannot claim exclusivity over it.
Dominant Rule: The Confusion With Anti-Dissection Rule
Having noted the “anti-dissection rule” and its facets, it is important to consider that, in applying this rule, the Court was also required to consider the “dominant mark” test, under which, if any part of the plaintiff’s mark is found to be dominant, the Court must consider whether the defendant has infringed on that dominant part of the plaintiff’s mark. The Court did not break the anti-dissection rule by identifying a dominating part of the plaintiff’s mark and determining whether it was infringed by the dominant part of the defendant’s mark, according to the court. This principle was observed in the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., FAO(OS) 389/2014[4] as follows:
“While a mark must be examined in its totality, it is allowed to assign greater or lesser value or “dominance” to a particular piece or element of a mark in the case of composite marks. As a result, a ‘dominant mark’ is a component of a composite mark that has a higher prominence than the other constituent pieces.”
The Court further observed that even though it has also been established that, while a trademark should be examined in its totality, the consideration of a trademark as a whole does not permit infringement where only a portion of the trademark is appropriated. In the case of composite marks, it is not incorrect to identify aspects or features of the marks that are essential for the purposes of analysis.
Conclusion
It is not sufficient to compare a trademark to another trademark that is already registered and whose proprietor is opposing the registration of the former trademark in order to determine whether it is likely to deceive or cause confusion. It’s crucial to determine the distinguishing or essential feature of the already registered trademark, as well as the main feature or main idea underlying that trademark; if the alleged trademark contains the same distinguishing or essential feature or conveys the same idea, it’s a clear case of intent to deceive or cause public confusion.
Exclusivity can only be asserted, and infringement/passing off can only be alleged, if the plaintiff’s complete mark is involved, not just a portion of it. The registration of the entire mark does not grant the proprietor of the mark exclusive rights to any component of the mark. It is possible for the plaintiff to claim infringement based on the defendant’s copying of a part of the mark, as long as the part copied is the dominant component or an essential characteristic of the plaintiff’s trademark. However, no exclusivity can be claimed, over a descriptive mark, or a descriptive part of the mark, even by misspelling it.
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Rule of Anti-Dissection in Trademark Law
Authors : Nilanshu Shekhar, Rishabh Manocha and Akanksha Anand
According to the Anti-Dissection rule, a trademark law theory, any comparison between two potentially incompatible marks must be evaluated holistically, or according to how consumers in the marketplace perceive the marks, rather than by examining each mark separately. All of the criteria should be used to evaluate the marks. However, this does not exclude an examination of the mark’s dominant and subordinate qualities in order to ascertain which elements have the greatest impact on customers. This principle is founded on the idea that the combined effect of a composite mark will be more impressive to a typical prospective consumer than the sum of its parts.
Background
The rule was first propounded in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals, 1965 AIR 980.[1] The court held that when the defendant’s use of the mark that is claimed to infringe the plaintiff’s mark is shown to be “in the course of trade,” the question of whether there has been an infringement is resolved by comparing the two marks. It should, however, be borne in mind that the object of the inquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
The Supreme Court observed the differences between a passing-off action and trademark infringement. The Court pointed out that while passing off action is a common law remedy, infringement has been a statutory remedy. By virtue of the proviso of Section 6(3) of the Trademark Act, 1999, a mark that is not “adapted to distinguish” by the application of the requirements provided out in Section 6(1) of the Act may nonetheless qualify for registration by proof of acquired distinctiveness. The Apex Court after taking into consideration the said provision held that the term “distinctiveness” could not mean “suited to distinguish,” because if it did, the proviso would contribute nothing to the provision and would make no difference in the law between new and old marks that had been in use continuously before the designated date. It was therefore impossible to accept a construction that would put old and new marks on the same footing and subject them to the same registration criteria.
In the landmark judgment of Amritdhara Pharmacy v. Staya Deo Gupta, 1963 AIR 449,[2] the Supreme Court after ruling that “the use of the word “dhara,” which literally means “current or stream,” “was not by itself decisive of the matter.” The Supreme Court went on to rule that “the overall structural and phonetic similarity” between the names “Amritdhara” and “Lakshmandhara,” which were used in connection with identical products, was likely to cause confusion. From the customer’s perspective, the Supreme Court reaffirmed the anti-dissection principle, stating that “an unwary purchaser of average intelligence and imperfect recollection would not, as the High Court assumed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as “current of nectar” or “Current of Laxman.””
The courts, in this case set down rules/guidelines, the essence of which echoes till today. The courts laid down the test for determining if the two marks were similar.
Two Important Tests:
- Reasonable Man’s Test: The differentiation of the two marks must be done from the point of view of a man with average intelligence and imperfect recollection.
- Overall Impression Test: According to this test, we must see the overall impression of the two marks. This includes the overall phonetic and visual similarity of the two marks.
The court, in this case, remarked that a man would have to be “unusually stupid” or must be a fool or an idiot to be deceived between the two marks. The overall impression of the two marks showed obvious differences.
In a very recent case of PhonePe Pvt. Ltd. v. Ezy Services & Anr., IA 8084/2019 in CS(COMM) 292/2019,[3]the Delhi High Court applied the rule of anti-dissection. It stated that the plaintiff has not registered ‘PhonePe’ as two different marks rather it must be seen as a whole. The marks ‘PhonePe’ and ‘BharatPe’ cannot be dissected for suit for infringement as the word ‘Pe’ is merely misspelling of the word ‘Pay’ and the plaintiff cannot claim exclusivity over it.
Dominant Rule: The Confusion With Anti-Dissection Rule
Having noted the “anti-dissection rule” and its facets, it is important to consider that, in applying this rule, the Court was also required to consider the “dominant mark” test, under which, if any part of the plaintiff’s mark is found to be dominant, the Court must consider whether the defendant has infringed on that dominant part of the plaintiff’s mark. The Court did not break the anti-dissection rule by identifying a dominating part of the plaintiff’s mark and determining whether it was infringed by the dominant part of the defendant’s mark, according to the court. This principle was observed in the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., FAO(OS) 389/2014[4] as follows:
“While a mark must be examined in its totality, it is allowed to assign greater or lesser value or “dominance” to a particular piece or element of a mark in the case of composite marks. As a result, a ‘dominant mark’ is a component of a composite mark that has a higher prominence than the other constituent pieces.”
The Court further observed that even though it has also been established that, while a trademark should be examined in its totality, the consideration of a trademark as a whole does not permit infringement where only a portion of the trademark is appropriated. In the case of composite marks, it is not incorrect to identify aspects or features of the marks that are essential for the purposes of analysis.
Conclusion
It is not sufficient to compare a trademark to another trademark that is already registered and whose proprietor is opposing the registration of the former trademark in order to determine whether it is likely to deceive or cause confusion. It’s crucial to determine the distinguishing or essential feature of the already registered trademark, as well as the main feature or main idea underlying that trademark; if the alleged trademark contains the same distinguishing or essential feature or conveys the same idea, it’s a clear case of intent to deceive or cause public confusion.
Exclusivity can only be asserted, and infringement/passing off can only be alleged, if the plaintiff’s complete mark is involved, not just a portion of it. The registration of the entire mark does not grant the proprietor of the mark exclusive rights to any component of the mark. It is possible for the plaintiff to claim infringement based on the defendant’s copying of a part of the mark, as long as the part copied is the dominant component or an essential characteristic of the plaintiff’s trademark. However, no exclusivity can be claimed, over a descriptive mark, or a descriptive part of the mark, even by misspelling it.
Trademark Registration Process in India
Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand Proceeding Procedure, And The Time Frame After filing the application, the registry issues an official receipt with the filing date and application…
Trademark Hearing: Key Steps to Strengthen Your Case
Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand We have often been at the receiving end in defending IP practices in India by several clients and foreign associates. Most notable…
Civil and Criminal Remedies – Trademark Infringement & Passing Off
Authors : Nilanshu Shekhar, Atul Dhyani Section 29 and 30 of the Trade Marks Act, 1999 deals with the infringement actions as a remedy against unlawful and unauthorized use of…
Procedure to Register a Trademark in India
Authors : Nilanshu Shekhar, Akanksha Anand, Rishabh Manocha The process for registering a trademark in India is as follows: 1. Search for conflicting marks: The first step in the trademark…
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